Loggerhead TTAB Decision

7/25/2019 Loggerhead TTAB Decision

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Hearing: Mailed:

February 24, 2016 June 30, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re Loggerhead Tools, LLC________

Serial No. 85700986

_______

John E. Munro of Vedder Price PC,1

for Loggerhead Tools, LLC.

Barney L. Charlon, Trademark Examining Attorney, Law Office 104,

Dayna Brown, Managing Attorney.

_______

Before Ritchie, Gorowitz, and Hightower, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Loggerhead Tools, LLC has filed an application to register the mark

shown below for hand tools, namely, gripping tools in the nature of wrenches

1 Different counsel made appearances at the oral hearing, Sarah E. Spires of

Skiermont Derby LLP, for Applicant, and Supervisory Senior Attorney Lydia Belzer,

on behalf of the Office.

This Opinion Is a Precedent

of the TTAB


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and wire crimpers for sale through mass merchandisers to retail consumers,

in International Class 8:2

The application contains a description of the mark as follows:

The mark consists of a motion mark depicting the product

configuration of a hand tool in which six rectangular-shaped

jaw-like elements of the circular head of a hand tool radially

move in and out. The elements symmetrically converge and

diverge in a mechanical iris-type motion. The broken or dotted

lines are not part of the mark and serve only to show the

position or placement of the moving elements of the mark in thehand tool.

The Trademark Examining Attorney has refused registration of the

applied-for mark under Section 2(e)(5) of the Trademark Act of 1946, 15

U.S.C. 1052(e)(5), on the ground that Applicants proposed mark is

functional and thus unregisterable. When the refusal was made final,3

2 The application was filed on August 10, 2012, pursuant to Section 1(a) of the

Trademark Act, 15 U.S.C. 1051(a), claiming March 2005 as the date of first use

and June 2005 as the date of first use in commerce. The application asserts acquired

distinctiveness under Section 2(f) of the Trademark Act.3The application was initially refused on additional grounds which were withdrawn

with the final office action issued on October 26, 2014.


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Applicant appealed and requested reconsideration. After the request for

reconsideration was denied, the appeal was resumed. Both parties filed

briefs, and Applicant filed a reply brief. Applicant requested an oral hearing,

which was presided over by this panel. For the reasons discussed below, we

affirm the functionality refusal.

2(e)(5) Functionality

The Supreme Court has explained that a product feature is functional,

and cannot serve as a trademark, if it is essential to the use or purpose of

the article or if it affects the cost or quality of the article. TrafFix Devices

Inc. v. Marketing Displays Inc., 532 US 23, 58 USPQ2d 1001, 1006 (2001)

(quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4

n.10 (1982)). Functional matter cannot receive trademark protection. At its

core, the functionality doctrine serves as a balance between trademark and

patent law, as noted by the Supreme Court in Qualitex Co. v. Jacobson

Products Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995):

The functionality doctrine prevents trademark law, which

seeks to promote competition by protecting a firms

reputation, from instead inhibiting legitimate competition

by allowing a producer to control a useful product feature.

It is the province of patent law, not trademark law, to

encourage invention by granting inventors a monopoly over

new product designs or functions for a limited time, 35U.S.C. 154, 173, after which competitors are free to use

the innovation. If a products functional features could be

used as trademarks, however, a monopoly over such

features could be obtained without regard to whether they

qualify as patents and could be extended forever (because

trademarks may be renewed in perpetuity).


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In determining the possible functionality of a proposed mark, we consider

the following four factors as set forth by our primary reviewing court, the

Court of Appeals for the Federal Circuit:

(1) the existence of a utility patent that discloses the utilitarian

advantages of the design sought to be registered;

(2) advertising by the applicant that touts the utilitarian advantages

of the design;

(3) facts pertaining to the availability of alternative designs; and

(4) facts pertaining to whether the design results from a

comparatively simple or inexpensive method of manufacture.

In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16

(CCPA 1982).

Although Morton-Norwichwas decided prior to the Supreme Court cases

ofInwood, Qualitex,and TrafFix, the Court of Appeals for the Federal Circuit

has since determined that the four factors continue to be availing in a

functionality analysis. See Valu Engg Inc. v. Rexnord Corp., 278 F.3d 1268,

61 USPQ2d 1422, 1427 (Fed. Cir. 2002) (We do not understand the Supreme

Courts decision in TrafFix to have altered the Morton-Norwich analysis.).

Utility Patent

Applicant is the owner by assignment of United States Patent No.

6,889,579, entitled Adjustable Gripping Tool. One embodiment includes six

gripping elements as shown in figure one of the patent:


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In the background of the invention, the utility patent includes the following

description of the tools motion:

the gripping tool of the present invention symmetrically translates

the force applied to the gripping tool onto the workpiece in a

symmetrically balanced and mechanically advantaged and efficientway.

As indicated by the Supreme Court, A utility patent is strong evidence that

the features therein claimed are functional. TrafFix, 532 U.S. at 29.

Applicant, however, argues that the motion for which it seeks registration


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herein is not claimed in the utility patent. Precedent nevertheless dictates

that the relevant language need not be in the claims themselves. Indeed,

TrafFix teaches that statements in a patents specification illuminating the

purpose served by a design may constitute equally strong evidence of

functionality. In re Becton, Dickinson & Co., 675 F.3d 1368, 102 USPQ2d

1372, 1377 (Fed. Cir. 2012).

We find Applicants description of the invention in the utility patent,

taken together with the drawings therein, to be on point with the relevant

portion of the description and drawing of the tool in the present application

for this product configuration motion mark.4 The patent thus is strong

evidence that the matter is functional. See TrafFix, 58 USPQ2d at 1005;

Becton, 102 USPQ2d at 1377.

Applicant argues that its design is actually the subject of a design patent,

United States Patent No. D618,974, entitled Hydrant Tool. The design

patent contains one claim, which states The ornamental design for a hydrant

tool, as shown and described. The drawings in the design patent display only

five gripping elements:

4We note that both Applicant and the Examining Attorney have characterized the

mark in their briefs (and in Applicants reply brief) as product design. See, e.g., 13

TTABVUE 5; 15 TTABVEUE 7; 16 TTABVUE 18.


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Applicant argues that its design patent is persuasive evidence of the non-

functionality of the overall design. However, the facts of this case are

analogous to those discussed by the Court of Appeals for the Federal Circuit

inBecton. There, the Court found that, although the applicant had a design

patent, the fact that a device is or was the subject of a design patent does

not, without more, bestow upon said device the aura of distinctiveness or

recognition as a trademark. Id. at 1377 (quoting In re R.M. Smith, Inc., 734

F.2d 1482, 1485 [222 USPQ 1] (Fed. Cir. 1984)). The Becton court further

observed that the design patent in that case did not reflect the specific design

for which trademark protection was sought, thus noting:

Our law recognizes that the existence of a design patent for the

very design for which trademark protection is sought

presumptively . . . indicates that the design is not de jure

functional. Morton Norwich, 671 F.2d at 1342 n.3. Absent

identity between the design patent and proposed mark, the


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presumption loses force, and the similar design patents lack

sufficient evidentiary value to overcome the strong conclusion in

this case that [applicants] utility patents underscore the

functionality of significant elements of the proposed mark.

Becton, 102 USPQ2d at 1377. Likewise, here, we find that Applicants design

patent does not cover the motion described in the application. Specifically,

unlike the utility patent, the design patent depicts a figure with only five

gripping elements, not six, and does not anywhere describe the motion of the

tool. Since the design patent, unlike the utility patent, is not on point, we find

it unavailing, and we follow the reasoning of the Federal Circuit inBecton in

finding that the non-identical design patent fails to overcome the strong

conclusion that the disclosure of the utilitarian advantages in the utility

patent indicates functionality. Id.

Advertising Touting Utilitarian Advantages

With this second Morton-Norwich factor, we consider evidence regarding

advertising materials in which the originator of the design touts the designs

utilitarian advantages. Valu Engg v. Rexnord Corp., 61 USPQ2d at 1426

(citingMorton Norwich);see also In re Heatcon, Inc., 116 USPQ2d 1366, 1373

(TTAB 2015). The Examining Attorney points to numerous instances where

Applicant touts its patented motion feature as a utilitarian advantage of its

tool. Specifically, Applicant touts the symmetrical movement of the six

gripping elements in its product configuration as providing the benefit of an


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equal distribution of force on the work object, with less strain on the corners

of the nut or bolt.

Some examples include the following:5

According to LoggerHead Tools, . . . [t]hese tools combine the

functionality of an adjustable wrench and pliers to automatically

size and grip fasteners.

Professional Tools & Equipment News; May 2006.

Attached to January 23, 2013 Response to Office Action, p.123.

This wrench automatically sizes and grips a wide range of nuts

and bolts distributing equal force on all sides of a fastener.

Colorado Country Life; June 2006.Attached to January 23, 2013 Response to Office Action, p. 125.

When the ergomonic handle is squeezed, six steel jaws

simultaneously converge on the sides of the nut or bolt for a

tight fit that reportedly will not slip or round off the edges.

FMC; August 2006.

Attached to January 23, 2013 Response to Office Action, p. 129.

With a one-handed squeeze the Bionic Wrench automaticallysizes and grips the U.S and metric sized nuts and bolts,

distributing equal force on all sides.

Land Line; July 2005.

5Applicant submitted hundreds of pages of advertisements and media referencesinto the record. On many of these, Applicant highlighted by hand certain key points

in the document. When scanned, as the documents are, the added shading makes it

quite challenging to view the wording beneath the highlighting. The better practice

would be to refer to the cited quotes in the response by exhibit and page number and

to submit as clear a copy as possible. Filers are responsible for ensuring that allsubmissions are legible. See Trademark Trial and Appeal Board Manual of

Procedure (TBMP) 110.09(c)(2) (June 2015) (ESTTA filings). PDF files created

from scanned documents are typically lower in quality than those generated directly

from word processing files, webpages, or other digital content. In cases where

scanning cannot be avoided, filers are urged to inspect the resulting PDF file for

quality prior to filing. After scanning, annotations such as highlighting can be added

with some PDF software. Doing so usually produces better results than highlighting

by hand prior to scanning.


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With one hand squeeze, the 8-in. wrench automatically sizes and

grips nuts and bolts and distributes equal force on all sides of

the work, eliminating the need to search for an exact sizewrench.

MOTOR; August 2005.


The Bionic Wrench As Seen On TV! The Bionic Wrench is a

remarkable patented hybrid of an adjustable wrench with the

ease of use of a pair of pliers. In addition, the genius of attaching

a bolt/nut on all 6 flat sides removes the stress and strain on the

corners of the bolt.Coastaltool.com; July 25, 2012.


Bionic Wrench offers mechanical advantage:

The hybrid tool delivers a mechanical advantage because it

equally distributes force around the workload, the company said

in a news release.

The Trucker; August 31, 2005.


Herrington Customer Patents Breakthrough Bionic Wrench-

Gives You a 6 Million Dollar Arm!: Dan Browns been a loyal

customer for years, so I was flattered when he asked us to help

introduce his latest invention. Dan already holds 25 U.S.

patents so hes a proven innovator. But Bionic wrench may be

his best ever receiving the prestigious Editors Choice Award

from the hard-to-impress folks at Popular Mechanics.

Combining the best features of an adjustable wrench with the

simplicity of pliers, Bionic Wrench automaticallygrips the most

common sizes of U.S. and metric nuts and bolts. . . Better yet,

you gain a mechanical advantage unlike any other hand tool.Herrington; [undated].


This evidence also strongly supports a finding that Applicants applied-for

mark is functional.


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Availability of Alternative Designs

Because the first two factors show that Applicants design is functional

(i.e., it affects the . . . quality of the article), we need not address whether

other designs exist or are hypothetically feasible. See TrafFix, 58 USPQ2d at

1005; Becton, 102 USPQ2d at 1378 (where the patent and advertising

evidence established functionality, the Board did not need to analyze whether

alternative designs exist). Nevertheless, in an interest in completeness

(should Applicant seek judicial review of our decision), we address Applicants

argument that there are many alternative designs already in existence in

the marketplace competing in the adjustable wrench product category.

Applicants Appeal Brief, 13 TTABVUE 19. To support this argument,

Applicant submitted declarations from Dr. James Edward Colgate and Mr.

Tong Jin Kim, both dated April 23, 2015. Both appear to be qualified as

experts in the field of industrial design, which was not disputed by the

Examining Attorney.6 Referring to alternative designs, Dr. Colgate

commented that the applied-for mark depicts one alternative among many

6 Both experts offered the legal conclusion: In my opinion, the Applied-for Mark

does not depict a functional product design. Colgate, para. 7, at April 27, 2015

Request for Reconsideration p.16; and Kim para 7, at April 27, 2015 Request for

Reconsideration p. 50. However, neither appears to be qualified as an expert in the

field of trademark registration, and we give no weight to those legal conclusions. Cf.Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1401 (TTAB 2010)

([T]he Board is responsible for determining whether the marks are similar, and we

will not substitute the opinion of a witness, even an expert witness, for our

evaluation of the facts.) (citing Fisons Ltd. v. UAD Laboratories, Inc., 219 USPQ

661, 663 (TTAB 1983) (The opinions of witnesses, even expert witnesses, on the

question of likelihood of confusion are entitled to little if any weight and should not

be substituted for the opinion of the tribunal charged with the responsibility for the

ultimate opinion on the question. (citations omitted)).


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possible alternatives for a tool that provides an adjustment feature so that

the tool can be used with more than one size of fastener. Colgate decl., at

para 8, April 27, 2015 Request for Reconsideration p. 16, 8 TTABVUE 23. Dr.

Colgate further stated that Such alternative designs could provide similar

benefits of adjustability and distribution of forces but they exhibit very

different aesthetic appearances. Id. at para. 9. He referred to Exhibit 1 to his

declaration, 8 TTABVUE 25-27:


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Mr. Kim, whose declaration incorporated and referred to the same Exhibit

1, similarly stated that there are many ways to adjustably grip and turn a

fastener. . . . [A]ll of these designs share a common function of engaging a

fastener and transmitting a rotational force. Kim decl., at para 8, April 27,

2015 Request for Reconsideration p. 50, 8 TTABVUE 57. He further stated

that aesthetic design choices made by Applicant include the size and shape

of the jaws relative to the size and shape of the head of the tool coupled with

their resulting movements of the jaws. Id. at para. 9.

Applicants reply brief refers to overwhelming evidence of alternative

designs evidenced in Exhibit 1 to the Colgate and Kim declarations, showing

moving jaw-like elements and other adjustable wrenches. 16 TTABVUE 15-

16. We understand the expert declarations to be referring to the general

motion of adjustability and not to adjustability achieved by virtue of the

simultaneous convergence or iris-like motion discussed in the utility patent

or described in the application for trademark registration. While there are

numerous examples of adjustable wrenches, there are only a few examples in

the record that appear to move in an iris-type motion as described in the

application. Applicants own evidence indicates that its design sets it apart as

one of the best, thereby hampering or even eliminating competition in this

regard. See In re Bose, 772 F.2d 866, 227 USPQ 1, 6 (Fed. Cir. 1985) (If the

feature asserted to give a product distinctiveness is the best, or at least one,

of a few superior designs for its de facto purpose, it follows that competition is


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the possibility that Applicants design is otherwise cost effective. See Becton,

102 USPQ2d at 1378 (where the only evidence of the fourth factor constituted

declarations from applicant, the Board did not err in refusing to weigh them).

We find Applicants evidence unpersuasive with regard to this factor.

Summary of Functionality Findings

In considering the Morton-Norwich factors, we note again that a utility

patent is strong evidence of functionality. Applicants utility patent describes

the gripping motion that symmetrically translates the force applied to the

gripping tool onto the workpiece in a symmetrically balanced and

mechanically advantaged and efficient way. We find that this describes the

iris-type motion that Applicant seeks to register with its product

configuration trademark application. Applicants design patent, on the other

hand, does not describe the iris-type motion, and thus does not counter our

finding. The strong evidence of functionality from the utility patent is further

supported by advertisements touting the utilitarian aspects of the motion. We

find based on the utility patent and advertising that the design is functional

in a utilitarian sense. As a consequence, Applicants evidence of alternative

designs and comparative cost of manufacture is unavailing. See Becton, 102

USPQ2d at 1378 ([I]f functionality is found based on other considerations,

there is no need to consider the availability of alternative designs, because

the feature cannot be given trade dress protection merely because there are

alternative designs available. Valu Engg 278 F.3d at 1276.).


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Applicants Other Arguments

Applicant argues that we must weigh all the elements of the applied-for

mark in our determination of functionality.

Some of these elements include the size of the jaw-like elements,

the shape of the jaw-like elements, the relative size and

orientation of the jaw-like elements, the shape of the opening,

the relative size of the opening, the exposure of the jaw-like

elements so that a consumer can see the movement of the jaw-

like elements, among others.

Reply Brief, 16 TTABVUE 6.

Applicant notes that some of these features, such as the visibility of the

jaws, are nonfunctional aesthetic design choices made by Appellant during

the creation of its product. Id. at 10. The Court of Appeals for the Federal

Circuit has advised that it is appropriate to weigh the elements of a mark in

determining its overall functionality. See Becton, 102 USPQ2d at 1376 (citing

Morton Norwich). That court has also cautioned, however, that we must

reach our ultimate conclusion based on the applied-for mark as a whole. Id.

In doing so, we are mindful of the statements made by the Supreme Court:

In a case where a manufacturer seeks to protect arbitrary,

incidental, or ornamental aspects of a product, . . . the

manufacturer could perhaps prove that those aspects do not

serve a purpose within the terms of the utility patent.

TrafFix, 532 U.S. at 34. In considering all of the matter in Applicants

applied-for mark, we do not find that the non-functional elements, such as

the visibility of the motion and other aesthetic aspects of the jaws, serve to

outweigh the overall functionality. In reaching this conclusion, we note that


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in analyzing Applicants product configuration motion mark, the analysis is

the same as it would be for any other product configuration, product design

trade dress or other non-traditional mark such as color or sound. See

Trademark Manual of Examining Procedure (TMEP) 1202.02(a)(viii))

(April 2016) and case law discussed therein.

Applicant has also referred to two registered motion marks. Registration

No. 1,946,170 is owned by Yamaha Hatsudoki Kabushiki Kaisha for jet

propelled water vehicles, in International Class 12, claiming acquired

distinctiveness in the following mark:

The registration contains the following description:

The mark is comprised of a three dimensional spray of water

issuing from the rear of a jet propelled watercraft and is

generated during the operation of the watercraft

Registration No. 2,793,439 is owned by Automobili Lamborghini S.P.A., for

automobiles, in International Class 12, claiming acquired distinctiveness in

the following mark:


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It contains the following description:

The mark consists of the unique motion in which the door of a

vehicle is opened. The doors move parallel to the body of the

vehicle but are gradually raised above the vehicle to a parallelposition.

Applicant argues that these motion marks were registered despite serving a

functional purpose. Although referencing the registrations in its August 15,

2013 Response to Office Action, Applicant did not include copies of the two

registrations or the files thereof in the record. There is no indication that any

of the Morton-Norwich factors were at issue in the prosecution of either

application, including the presence of utility patents or advertising touting

the utilitarian advantages of the motion, as is the case here. Even if this

record included that evidence, it would not help applicant. The USPTO must

examine each application on its own merits based on the record in the

application under consideration and neither the USPTOs examining

attorneys nor the Board are bound by the decisions of other examining

attorneys in other applications. SeeIn re Cordua Restaurants, Inc., --F.3d--,

118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (The PTO is required to examine


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all trademark applications for compliance with each and every eligibility

requirement . . . .); In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91

USPQ2d 1218, 1221 (Fed. Cir. 2009) (Even if all of the third-party

registrations should have been refused registration . . . , such errors do not

bind the USPTO to improperly register Applicants marks.) (citation

omitted); In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.

Cir. 2001) (Even if some prior registrations had some characteristics similar

to Nett Designs application, the PTOs allowance of such prior registrations

does not bind the Board or this court.). Accordingly, these registrations are

unavailing in our analysis.

Applicant next points to two nonprecedential Board decisions in which

functionality refusals were reversed, arguing that the facts are analogous to

those herein. The cases are In re Lin,Application Serial No. 85065887 (TTAB

December 14, 2012) (reversing functionality refusal on exercise and toy

hoop), and In re Hershey,Application Serial No. 77809223 (TTAB December

8, 2011) (reversing functionality refusal on product configuration of Hersheys

candy bar). The facts are not analogous, however, since in neither case was a

utility patent of record.8

8 While applicants may cite to non-precedential decisions, such decisions are not

binding on the Board and the Board does not encourage this practice. In re Fiat Grp.

Mktg. & Corporate Commcns S.p.A., 109 USPQ2d 1593, 1596 n.6 (TTAB 2014); In re

Procter & Gamble Co., 105 USPQ2d 1119, 1121 (TTAB 2012); In re Luxuria s.r.o.,

100 USPQ2d 1146, 1151 n.7 (TTAB 2011);Corporacion Habanos SA v. Rodriquez,

99 USPQ2d 1873, 1875 n.5 (TTAB 2011).


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Finally, Applicant argues that its design is distinctive and has been the

subject of numerous awards. We note that the application is subject to a

claim of acquired distinctiveness. Nevertheless, the Trademark Act (also

known as the Lanham Act) specifically excludes material refused under

Section 2(e)(5) from Section 2(f) claims of acquired distinctiveness. 15 U.S.C.

1052(f) (Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3),

and (e)(5) of this section, nothing in this chapter shall prevent the

registration of a mark used by the applicant which has become distinctive of

the applicants goods in commerce.); see also TrafFix, 58 USPQ2d at 1007

(The Lanham Act, furthermore, does not protect trade dress in a functional

design simply because an investment has been made to encourage the public

to associate a particular functional feature with a single manufacturer or

seller.).

When considering the proposed product configuration motion mark as a

whole, we find that the Morton-Norwich factors indicate that it is functional.

Applicants utility patent and the abundance of its advertisements touting

the utilitarian advantages offered by the identified motion highlight that the

product feature[s] Applicant seeks to register affect[ ] the . . . quality of the

article. See TrafFix, 58 USPQ2d at 1006. It therefore cannot be registered.

Decision:The refusal to register is affirmed.

Documents

Loggerhead TTAB Decision